|Policy Name:||Intellectual Property (Continued)|
|Date Passed:||12/02/1987; Amended 02/15/2006|
|Last Reviewed:||March 2009|
|Review Next:||March 2011|
The Texas Woman's University
Policy on Intellectual Property
Part 3 - Technology Evaluation, Protection, and Dissemination
The Associate Dean for Research (ADR) and the Intellectual Property Committee (IPC) are responsible for facilitating the transfer of TWU technology to public use and benefit. The IPC evaluates the commercial potential of TWU technology and decides whether to proceed with commercial development of the technology. The Associate Dean for Research assists the IPC in its evaluation of the intellectual property, obtains proprietary protection for selected technology, and assists in the distribution of technology for research purposes, as described in this PART 3. The Associate Dean may assist in the commercial development of selected intellectual property by identifying potential markets and negotiating license agreements when approved by the University, as described in PART 4.
The initial step in establishing contact with the IPC is usually the submission of a TWU Intellectual Property Disclosure Form to the ADR. This form can be obtained from the Office of Research and Grants Administration. When submitted, the Intellectual Property Disclosure Form will initiate action by the IPC to investigate the patenting (or other methods of protection) and marketing of the technology unless accompanied by a letter requesting other action by TWU, such as a waiver of TWU's ownership rights in the technology.
Sponsored Programs - The terms of sponsored research and other agreements normally create obligations with respect to the reporting of inventions, technical data, and copyrightable works (such as software). In particular, inventions and copyrightable works developed under sponsored research should be promptly reported to the ADR by submitting an Intellectual Property Disclosure Form. The ADR is responsible for discharging TWU's obligations to research sponsors.
Other Programs - Inventions or technology developed under TWU administered programs, either as work-for-hire or with significant use of TWU funds or facilities, should also be submitted to the ADR using an Intellectual Property Disclosure Form. Independently owned technology need not be disclosed to the ADR unless the owner of the technology desires TWU to assist in the commercialization of the technology. In such cases, the technology should be submitted to the ADR using the Intellectual Property Disclosure Form.
Although patent protection is sometimes sought for various noncommercial reasons (such as professional status), TWU will not seek protection for concepts which are not commercially attractive even if the concept is intellectually meritorious. TWU will normally seek patent protection on inventions in order to pursue commercial licensing and to comply with the terms of sponsored agreements. The procedures for obtaining patents on inventions are described in PART 4 - COMMERCIAL DEVELOPMENT.
It is important to understand at the outset that any publication which describes an invention (even in minimal detail) prior to filing for a patent may preclude patenting in foreign countries and may also preclude protection in the United States unless a patent is filed within one year from publication. The implications of publication upon patent rights should be discussed with the ADR and a decision on patent filing reached promptly so that publication will not be delayed.
3.3.1 Asserting and Registering Copyright
Copyright protection of books, articles, and publications is sought in order to recognize authorship and protect the integrity of the work. It is also essential in order for TWU to license copyrightable materials to commercial book publishers and others and to comply with the terms of sponsored research agreements.
A copyright is established at the time expression is fixed in tangible medium. In order to maintain the copyright for the period prescribed under the copyright stature, notice of copyright must be affixed to the copyrightable material. Failure to affix the proper notice will cause the copyright to be lost after a certain period of time has elapsed from first publication of the work.
The following notice is to be applied on TWU-owned works to protect the copyright:
"Copyright (c) 2002 Texas Woman's University
All Rights Reserved."*
*The date in the notice should be the year in which the work is first published. No notice other than the forgoing is to be used for TWU-owned works.
For added copyright protection, certain works should be registered with the U. S. Copyright Office using its official forms.
3.4 Trade and Service Marks
3.4.1 Asserting and Registering Trade and Service Marks
A trade or service mark may be used to protect those names and symbols associated with certain TWU activities and events and with certain technology developments such as computer programs. Prior to registration for trademark protection, the designation "TM" after a trademark or "SM" after a service mark will give adequate notice of a claim of ownership. The designation "R" for a trade mark may only be used after federal registration.
The use of trade and service marks to protect TWU-owned intellectual property or to designate TWU as the origin of a product, event, activity, service, or the like, may be instituted only at the direction of the IPC. It is important to note that trademark protection carries with it certain obligations on the part of the holder of the mark. Therefore, requests for use of trade or service marks on behalf of the TWU must be coordinated by the ADR. Requests for the use and registration of trade and service marks may be directed to the IPC through the ADR.
3.5 Tangible Research Property
Tangible research property (TRP), such as biological materials and computer software, is frequently patented or copyrighted as appropriate and then licensed for commercial purposes.
However, these and other forms of TRP (including those under commercial license) generally are simultaneously distributed solely for research purposes under simple letter of understanding agreements or under more formal licenses.
The following sections deal only with dissemination of TRP for research and other noncommercial purposes. Commercial licensing of TRP is covered under PART 4.
3.5.1 Distribution for Scientific Research Use
In keeping with the traditions of academic science and its basic objectives, it is the policy of TWU that results of scientific research are to be promptly and openly made available to others. Since the traditional modes of dissemination through scholarly exchange and publication are not fully effective for most TRP, it is TWU policy that those research results which have tangible form should also be promptly and openly made available to other scientists for their scientific research, unless such distribution is inappropriate due to factors such as safety, the need to more fully characterize or develop the TRP prior to distribution, or unless such distribution is incompatible with other obligations.
3.5.2 Control of TRP
Where TRP is developed in the course of research which is subject to the terms of a sponsored research or other agreement, control over its development, storage, distribution, and use is the responsibility of the principal investigator, who will consult with the ADR. In other cases, significant use of TWU resources will be presumed, so control over TRP rests jointly with the laboratory director or department head when distribution of the TRP is to be made beyond the laboratory for scientific use by others in accordance with the terms of the policy.
3.5.3 TRP with Potential Commercial Value
Scientific exchanges should not be inhibited due to potential commercial considerations. However, where TRP may have potential commercial value as well as scientific value, the principal investigator (who may wish to make TRP available for scientific use in a manner which does not diminish its value or inhibit its commercial development) should seek guidance from the ADR.
The normal mechanism for commercialization of TRP is through licensing agreements as set forth in PART 4.
3.5.4 TRP Registration
Each item of TRP should have an unambiguous identification code and name sufficient to distinguish it from other similar items developed at TWU or elsewhere. The ADR should be consulted for assistance in developing appropriate identification systems.
3.5.5 Distribution of Biological TRP to Research Colleagues
Biological materials are, in many cases, patentable and licensed for commercial purposes under various types of patent licenses. They are also a form of tangible research property which can be distributed for commercial and/or research purposes with or without patent protection.
Biological TRP owned by TWU may usually be distributed for research purposes only with minimal conditions attached. Any such distribution is subject to an agreement by the recipient that commercial development or commercial use or further transfer of the biomaterial is not to be undertaken. In addition, the principal investigator may wish to control subsequent use by requiring recipients to follow a specific research protocol (such as in the use of biological materials).
When distributing biological TRP to research colleagues outside the laboratory, costs of the materials and handling may be recovered from the recipient and returned to the account which funded those costs. When costs are charged for TRP distribution, adequate documentation must be maintained for audit purposes. If there is a possibility of a biohazard or other risk associated with the transport, storage, or use of a particular clinical research, the ADR should be contacted for advice on the appropriate from of disclaimers of liability and indemnities.
If the biological TRP was developed under a sponsored research agreement, the ADR should be contacted to advise on possible contractual obligations with respect to the TRP prior to its distribution for noncommercial purposes.
3.5.6 Distribution of Computer Software for Research Purposes
The distribution of TWU-owned computer software to colleagues for research purposes must be coordinated with the ADR if the software has potential commercial value, if the principal investigator wishes to control subsequent use, or if it is subject to the terms of a sponsored research or other agreement.
Part 2--TWU Policy Statements
Part 3--Technology Evaluation, Protection, and Dissemination
Part 4--Commercial Development
Part 5--Faculty, Student, Staff, and Visitor Obligation
Part 6--Administration and Appendices
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